Appeal No. 96-0215
Application 07/975,908
teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996) citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The Examiner notes on page 4 of the answer that Shelton, Jr.
fails to teach the claimed position of the filter and encoded
mask as set forth in claim 10. On the same page of the answer,
the Examiner states that it would have been obvious to one of
ordinary skill in the art to adapt commutativity of projection
which is an inherent property in optics to change the positions
of different elements in the Shelton's optical feature extraction
apparatus. We note that the Examiner did not provide any reason
for making this modification or any evidence in the prior art to
support the Examiner's conclusion.
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